Ex Parte Katz

Board of Patent Appeals and Interferences

Mar 22, 2005

09364675 (B.P.A.I. Mar. 22, 2005)

1
-The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 39
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte RONALD A. KATZ

Appeal No. 2005-0007
Application 09/364,675

HEARD: March 8, 2005

Before HAIRSTON, BARRETT, and LEVY, Administrative Patent Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 24
through 39.
The disclosed invention relates to the use of a travel card
to control a telephone system.
Appeal No. 2005-0007
Application 09/364,675
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Claim 24 is illustrative of the claimed invention, and it
reads as follows:
24. A telephone system of a type controllable by cards,
comprising:
a switching station including a switch processor capable of
receiving call data from at least one dial-up communication
source and a switching computer means capable of processing call
data;
said switching computer means controlling said switch
processor;
communication means capable of capturing call data received
by said switch processor, said call data including automatic
number identification and a personal identification number;
said communication means capturing call data at front side
of the call data received by the switch processor and supplying
said call data to the switching computer means, and capable of
supplying processed data from switching computer means to the
switching station;
said switching computer means being capable of obtaining
data for at least one parameter related to the card in addition
to said call data for the switching computer means to act upon in
processing call data and determining from said data from the
front side of the call data and additional parameter whether the
attempted call is placed by a caller in good standing in
accordance with parameters associated with the card;
said switching computer means capable of disallowing
completion of a call through the switching station if determined
from processing of call data and additional parameter by the
switching computer means that the call is not placed by a caller
in good standing; and
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Application 09/364,675
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said switching computer means capable of interrupting and
terminating said call in progress through the switch processor if
said switching computer means determines by data processing that
an available account status associated with the travel card has
been reached during the call.
The examiner did not use any prior art references in the
rejection of record.
Claims 24 through 39 stand rejected under the first
paragraph of 35 U.S.C. § 112 for lack of written description.
Reference is made to the briefs (paper numbers 29 and 33)
and the answer (paper number 31) for the respective positions of
the appellant and the examiner.
OPINION
We have carefully considered the entire record before us,
and we will sustain the lack of written description rejection of
claims 24 through 39.
Under the written description portion of the first paragraph
of 35 U.S.C. § 112, the applicant must convey with reasonable
clarity to those skilled in the art that, as of the filing date
sought, he or she was in possession of the claimed invention.
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d
1111, 1116-17 (Fed. Cir. 1991); In re Kaslow, 707 F.2d 1366,
1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983).
Appeal No. 2005-0007
Application 09/364,675
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The examiner has listed a host of limitations in each of the
claims on appeal that are allegedly not supported by the
originally filed application (answer, pages 4 through 6). The
examiner states, for example, that:
Claims 24-31 recite the use of “travel cards” for
“handling telephone calls” in a “telephone system
controllable by travel cards.” However, appellant’s
specification contains no teaching or suggestion of using
“travel cards” but, instead, discloses a lottery system to
which a caller from a valid telephone number can participate
using information on a lottery ticket. A travel card is a
telephone credit calling card which is issued by a service
provider and enables a caller to place long distance calls
over any phone and to charge the call to the card’s account.
In contrast, appellant’s specification is directed to a
lottery system to which a caller from a valid telephone
number can participate using information on a lottery ticket
(see Figure 2; page 4, line 12-page 5, line 13; page 21,
line [ ]-page 23, line 21; page 34, Abstract). A travel
card and a lottery ticket are separate, distinct entities
which carry out completely different functions. A telephone
travel card is issued by a telephone company to enable a
customer to place a long distance call over any phone and to
charge the call to the account of the accountholder. The
lottery ticket described in appellant’s specification allows
a user to participate in a lottery, not to place a call to a
desired second party over any telephone. Therefore, the
lottery ticket described in appellant’s specification cannot
be considered as a travel card as is defined in the
telephony art. (Answer, page 4).
The examiner is also of the opinion (answer, page 5) that
“Appellant’s specification does not provide support for a [sic]
using a caller’s automatic number identification and a PIN number
and a parameter relating to the card for determining whether the
Appeal No. 2005-0007
Application 09/364,675
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caller is in good standing, as recited in the independent claims
24, 31, 32 and 39.”
Appellant argues (brief, pages 7 through 12) that the term
“travel cards” is used in both the preamble as well as the body
of the claims to merely indicate “an exemplary use and does not
so limit the scope of the claims.” Appellant additionally argues
(brief, page 13) that a PIN number can be any one of the several
forms of identification (e.g., social security number, driver’s
license number or credit card number) listed in appellant’s
specification.
At the outset, we agree with appellant’s latter argument. A
PIN number can be any sequence of alphanumeric characters to
identify someone during a transaction. Since a PIN number can be
virtually anything keyed into the system for recognition of the
user by the system, we find that appellant’s disclosed system
uses the above-noted forms of identification as a PIN number as
set forth in the claims on appeal. Thus, the mere fact that
appellant’s specification does not call the above-noted numbers a
PIN number is not fatal to appellant’s quest to label such
numbers as PIN numbers.
Appeal No. 2005-0007
Application 09/364,675
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Turning to appellant’s only other argument on appeal, we
find that the originally filed application is silent as to a
“travel card,” and that the lottery ticket disclosed by appellant
is not described in the originally filed disclosure as a “travel
card.” Thus, any attempt by appellant to belatedly claim a
“travel card” based upon the disclosure of a lottery ticket is
improper under the written description portion of 35 U.S.C.
§ 112. Appellant’s argument that the term “travel card” is
merely an exemplary use and does not limit the scope of the
claims in spite of the use of the term in both the preamble and
the body of the claims is without merit in view of the Court’s
statement that “this term, appearing in every claim, does not
simply refer to the prior art or to a possible use, but describes
and limits the invention being claimed.” Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1306, 51 USPQ2d 1161, 1166
(Fed. Cir. 1999). In summary, the lack of written description
rejection of the claims that recite the term “travel card” in
both the preamble and the body of the claims (i.e., claims 24
through 31) is sustained.
Turning to claims 32 through 39, we find that these claims
broadly recite a “card” in both the preamble and the body of the
claim. The appellant correctly argues that the disclosed lottery
Appeal No. 2005-0007
Application 09/364,675
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ticket (Figure 2) is a card. On the other hand, we agree with
the examiner that the lottery card is incapable of performing the
card functions set forth in claims 32 through 39. For example,
nothing in the disclosed invention indicates that a “parameter”
is needed from the card before the system can determine whether
the card holder is “in good standing.” According to the
disclosed invention, the determination of being “in good
standing” is determined before any information is taken from the
lottery card. With respect to the “available account” status
associated with the card set forth in claims 32 through 38, we
find that appellant’s disclosure is completely silent as to such
an account associated with the lottery card. Accordingly, the
lack of written description rejection of claims 32 through 39 is
sustained.
DECISION
The decision of the examiner rejecting claims 24 through 39
under the first paragraph of 35 U.S.C. § 112 is affirmed.
Appeal No. 2005-0007
Application 09/364,675
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a)(1)(iv).
AFFIRMED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LEE E. BARRETT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
STUART S. LEVY )
Administrative Patent Judge )
KWH:pgc
Appeal No. 2005-0007
Application 09/364,675
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Reena Kuyper, Esq.
Byard Nilsson, Esq.
9220 Sunset Boulevard
Suite 810
Los Angeles, CA 90069